USPTO Patents Application 09543962

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/543,962

04/07/2000

James Shanahan

D/99458

2107

7590

John E Beck
Xerox Corporation
Xerox Square 20 A
Rochester, NY 14644

02/26/2004

EXAMINER

NGUYEN, MAIKHANH

ART UNIT

PAPER NUMBER

2176

DATE MAILED: 02/26/2004

4

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

9

Office Action Summary

Application No.

09/543,962

Applicant(s)

SHANAHAN ET AL.

Examiner

Maikhanh Nguyen

Art Unit

2176

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address «
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1)S Responsive to communication(s) filed on 07 April 2000 .
2a)D This action is FINAL. 2b)^ This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-36 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) ^ Claim(s) 1-36 is/are rejected.

7) D Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10) D The drawing(s) filed on is/are: a)D accepted or b)Q objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 -D Certified copies of the priority documents have been received.

2-D Certified copies of the priority documents have been received in Application No. .

3.D Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) [X] Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5 ) □ Notice of Informal Patent Application (PTO-152)
Paper No(s)/Mail Date 3. 6) □ Other: .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 4

Application/Control Number: 09/543,962
Art Unit: 2176

Page 2

DETAILED ACTION

1. This action is responsive to communications: original application filed 04/07/2000; IDS
filed 03/04/2003.

2. Claims 1-3^ are currently pending in this application. Claims 1,19, and 28 are
independent claims.

Information Disclosure Statement

3. As application No. 09/404,174 cited in the IDS filed 1 1/06/2000 (paper #2) has not been
considered since it is a pending application.

Claim Rejections - 35 USC § 103

4. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

Claims 1-36 are rejected under 35 U.S.C. 103(a) as being unpatentable over Serbinis et
al. (U.S. 6,314,425 - filed 08/1999).

As to independent claim 19, Serbinis teaches a method for acquiring information
pertaining to a document including information (Abstract), comprising:

Application/Control Number: 09/543,962 Page 3

Art Unit: 2176

- associating a set of document service requests with the document, wherein a document
service comprises a process for using a portion of the information (the document optionally may
automatically or selectively filtered in accordance with routines appropriate for the service
being performed; col 10, lines 34-50);

- selecting a document service request from the set (user selected filtering requested for
the document; colli, lines 46-55);

- initiating and managing communication with a service provider to satisfy the selected
document service (Fig. 2, the scheduled date/time for delivery & Fig.8).

Serbinis does not explicitly teach "integrating any results from the selected document
service into the document."

Serbinis, however, discloses ''The Originator may 'package ' a document prior to
uploading to the DMS system ...such 'packing' may be automatically ...storage of the document"
(colli, line 66 -col 12, line 8).

It would have been obvious to a person of ordinary skill in the art at the time the
invention was made to apply the teachings of Serbinis for "integrating any results from the
selected document service into the document" because it would have provided the capability for
permitting multiple service providers to utilize the common document management services of a
server, while presenting end-users with distinct dedicated websites.

As to dependent claim 20, Serbinis teaches the set of document service requests is
selected from a group of pre-packaged document service requests (colli, line 66-col.l2, line 7).

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Art Unit: 2176

As to dependent claim 21, Serbinis teaches the results from the selected document
service includes a new document service request associated with the document (coll 3, lines 25-
43 & col. 18, lines 10-22).

As to dependent claim 22, Serbinis teaches the document services are satisfied by a third
party service provider via an Internet protocol (colli, lines 56-65/col.21, lines 13-18 & Fig.5).

As to dependent claim 23, Serbinis teaches the scheduler updates the set of document
service requests on a predetermined schedule (col 17, lines 57-67).

As to dependent claim 24, Serbinis teaches the scheduler re-initiates selected document
service request on a periodic basis (colli, lines 36-55).

As to dependent claim 25, Serbinis teaches the periodic basis is determined by the
selected document service request (col 4, lines 5-23).

As to dependent claim 26, Serbinis teaches the set of document service s follow a pre-
determined sequence of calls to service providers for extracting information from other
documents, databases and data stores, and for searching, for other information responsive to any
extracted information from the other documents, databases and data stores (col 7, lines 10-65 &
Fig.2).

As to dependent claim 27, Serbinis teaches the pre-determined sequence of calls to
service providers are satisfiable asynchronously (col 9, lines 47-62).

Independent claim 1 is directed to a system for performing the method of claim 19, and
is similarly rejected under the same rationale.

Dependent claims 2-5 & 6-7 include the same limitations as in claims 20-23 & 33-34,
and are similarly rejected under the same rationale.

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Art Unit: 2176

As to dependent claim 8, Serbinis teaches the meta-document, the scheduler and the
service providers reside at the same location (col 12, lines 23-46).

As to dependent claim 9, Serbinis teaches the meta-document, the scheduler and the
service providers reside at different locations (col.6, lines 18-26 & col 12, lines 22-35).

Dependent claims 10-11 include the same limitations as in claims 26-27, and are
similarly rejected under the same rationale.

As to dependent claim 12, Serbinis teaches the document and the set of document
service requests are user- selectable (col 7, lines 42-51 / colli, lines 46-55 & col 12, lines 23-
36).

As to dependent claim 13, Serbinis teaches in addition to the scheduler, a user may
select a document service request from the set and initiate and manage communication with a
service provider to satisfy the selected document service (colli, lines 36-55/Fig.2, the scheduled
date/time for delivery & Fig.8).

As to dependent claim 14, Serbinis teaches a list of document service requests from
which the set of document service requests may be selected by a user (col. 18, lines 1-9).

As to dependent claim 15, Serbinis teaches the service provider is user-selectable
(col. 7, lines 42-51 / colli, lines 46-55 & col. 12, lines 23-36).

As to dependent claim 16, Serbinis teaches a service provider can register additional
document services to the list (col 12, lines 22-36).

As to dependent claim 17, Serbinis teaches a list of service providers available for
satisfying document services (Abstract & Fig.8, items 167a-c).

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Art Unit: 2176

As to dependent claim 18, Serbinis teaches the set of document service requests
associated with the document are associated using metadata (col 12, lines 37-46).

Independent claim 28, the rejection of independent claim 19 above is incorporated
herein in full.

Dependent claims 29-34, 35-36 and 37 include the same limitations as in claims 2-7, 10-
1 1 and 1 8, and are similarly rejected under the same rationale.

Conclusion

5. The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.

Serbinis et al. U.S Patent No. 6,584,466 issue dated: Jun. 24, 2003

Meltzer et al. U.S Patent No. 6,226,675 issue dated: May 1 , 2001

Thornton et al. U.S Patent No. 6,240,429 issue dated: May 29, 2001

6. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Maikhanh Nguyen whose telephone number is (703) 306-0092.
The examiner can normally be reached on Monday - Friday from 9:00am - 5:30 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Joseph H Feild can be reached on (703) 305-9792. The fax phone number for the
organization where this application or proceeding is assigned is 703-872-9306.

Application/Control Number: 09/543,962 Page 7

Art Unit: 2176

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Maikhanh Nguyen
February 22, 2004

SANJIV SHAH
PRIMARY EXAMINER